United States District Court, D. Connecticut
RULING ON MOTION TO COMPEL ARBITRATION
Michael P. Shea, U.S.D.J.
Armor All/STP Products Company (“Plaintiff”),
brings this action against Defendants TSI Products, Inc.,
Michael Quest, and William Quest (collectively,
“Defendants”) for allegedly deliberately copying
Plaintiff's trademarks, trade dress, and creative works
in order to compete with Plaintiff in the market for
“do-it-yourself” refrigerant kits for vehicle air
conditioners. Plaintiff brings claims for trademark
infringement, trademark counterfeiting, unfair competition,
trade dress infringement, and false advertising under the
Lanham Act, 15 U.S.C. § 1051 et seq., and copyright
infringement under the Copyright Act, 17 U.S.C. § 501 et
seq. Plaintiff also brings claims for trademark infringement,
unfair competition, and unjust enrichment under Connecticut
common law, and for unfair competition under the Connecticut
Unfair Trade Practices Act (“CUTPA”), Conn. Gen.
Stat. §§ 42-110a, et seq. Finally, Plaintiff brings
a claim for false patent marking under 35 U.S.C. § 292.
(See Amended Complaint, ECF No. 9.) Defendants move to
dismiss the complaint for lack of subject matter jurisdiction
and to compel arbitration under the Federal Arbitration Act
and a provision of a consulting agreement they argue governs
this dispute. (ECF No. 22.) For the reasons set forth below,
the motion is DENIED.
following facts are taken from the amended complaint (ECF No.
9) and the exhibits attached to the parties' briefs.
Plaintiff's Brand and Products
is “the recognized leader” in the industry of
“do-it-yourself” kits for replenishing lost
chemical refrigerant in vehicle air conditioners, a process
called “recharging.” (ECF No. 9 ¶ 12.)
Plaintiff's products allow consumers to add refrigerant
to their own vehicles, avoiding the need to take the car to
be serviced by a professional mechanic. (Id.)
Plaintiff sells its products at major hardware and automotive
supply retail stores throughout the United States.
(Id. ¶ 15.) Plaintiff also maintains three
websites that provide consumers with instructions for using
its kits and other information about its products.
(Id. ¶ 17.)
brands of do-it-yourself refrigerant kits and refill products
are sold under several trademarks, including “HIGH
MILEAGE, ” “A/C PRO, ” “ARCTIC
FREEZE, ” “SUB-ZERO, ” “EZ CHILL,
” and “BIG CHILL.” (Id. ¶
14.) The United States Patent and Trademark Office
(“PTO”) has issued Plaintiff two federal
trademark registrations for the “HIGH MILEAGE”
mark, one for the word mark HIGH MILEAGE for use in
connection with “refrigerant chemical preparations for
use in connection with automobile air conditioners, ”
and one for a stylized mark displaying the word HIGH in
diagonal, upward sloping letters above the word MILEAGE,
which is also displayed in diagonal, upward sloping letters
in “an odometer style format.” (Id.
¶ 18.) The HIGH MILEAGE marks were registered in 2011
and 2012, respectively, but Plaintiff and its predecessor IDQ
have sold refrigerant products under the marks since at least
as early as 2004, using online, print, and in-store
advertising. (Id. ¶ 20.) The HIGH MILEAGE marks
were originally registered to IDQ but were acquired by
Plaintiff during its merger with IDQ in 2015. (Id.
also uses certain trade dress on its “A/C PRO”
and “HIGH MILEAGE” families of products.
(Id. ¶ 24.) Plaintiff's A/C PRO trade dress
includes a black canister with a large black and white A/C
PRO logo along the top of the front face of the canister with
a black and white image of a man positioned behind the logo,
a blue banner along the middle of the canister, and a set of
icons and short phrases along the bottom of the canister
summarizing the benefits of the product. (Id. ¶
25.) Certain versions of Plaintiff's A/C PRO products
also include a banner with an image of a clock across the top
of the canister. (Id. ¶ 26.) Others display the
HIGH MILEAGE word mark across the front face of the canister.
(Id.) Plaintiff also uses a HIGH MILEAGE trade dress
for certain products, which prominently displays the stylized
HIGH MILEAGE mark in red and white on the front face of the
canister. (Id. ¶ 27.)
has sold do-it-yourself refrigerant products featuring its
BIG CHILL and ARCTIC FREEZE marks since 2005. (Id.
¶ 28.) Plaintiff's BIG CHILL product line features a
“prominent mountain design mark and trade dress,
” displaying a snow-covered mountain behind the BIG
CHILL logo on the face of the product. (Id.)
Plaintiff's ARCTIC FREEZE products have featured a blue
trade dress since 2005. (Id. ¶ 29.) In 2014,
Plaintiff commissioned the design of new ARCTIC FREEZE
product labels and advertising materials featuring images of
snow-covered mountains. (Id. ¶ 30.) Plaintiff
began distributing ARCTIC FREEZE products with the redesigned
label featuring the snow-covered mountain design mark in
2016. (Id. ¶ 32.)
2017, Plaintiff filed applications with the U.S. Copyright
Office to register as creative works the labels featured on
its A/C PRO and HIGH MILEAGE-branded products. (Id.
The Parties' Relationship and the Consulting
2007, refrigerant product supplier E.F. Products, L.P.
(“EF”), merged with Interdynamics, Inc.
(“Interdynamics”) to form IDQ, Plaintiff's
corporate predecessor. (Id. ¶ 38.) At that
time, Defendant William Quest was employed as President of EF
and Defendant Michael Quest served as Vice President,
Secretary, and Treasurer of EF. (Id. ¶ 40.) EF
used the HIGH MILEAGE marks before it merged with
Interdynamics. (Id. ¶ 39.) After the merger,
the marks were transferred to IDQ, and then to Plaintiff
after Plaintiff's merger with IDQ. (Id.)
Following the merger, Michael Quest remained employed by IDQ
as Executive Vice President from 2007 to 2009, and then
provided IDQ with consulting services in connection with the
sales of refrigerant products from 2009 to 2011.
(Id. ¶ 42.)
42 of the amended complaint alleges that Michael Quest's
work as a consultant for IDQ was governed by a consulting
agreement (“the Consulting Agreement”) executed
on July 28, 2009. The Consulting Agreement provided that
Michael Quest would not compete with IDQ until January 1,
2014. (Id. ¶ 42.) It also contained
confidentiality provisions requiring him to keep confidential
certain information learned during his employment with IDQ.
(Id.) The confidentiality provision was to remain in
effect indefinitely after the termination of the Consulting
complaint does not attach or, except in paragraph 42, refer
to the Consulting Agreement, but Defendants have attached a
copy to their motion to dismiss and compel arbitration.
VII, Section 7.1 of the Consulting Agreement provides:
Section 7.1 Remedy. Should Consultant engage in or perform,
either directly or indirectly, any of the acts prohibited by
Article IV or, in any other way, violate such Article, it is
agreed that the Company shall be entitled to full injunctive
relief, to be issued by any competent court of equity,
enjoining and restraining Consultant and each and every other
person, firm, organization, association, or corporation
concerned therein, from the continuance of such violative
acts. The foregoing remedy shall not be deemed to limit or
prevent the exercise by the Company of any or all further
rights and remedies which may be available to the Company
hereunder or at law or in equity.
Article IV of the Consulting Agreement sets forth the
non-compete and confidentiality obligations referred to in
paragraph 42 of the complaint, as well as other obligations.
Article VII, Section 7.2 of the Agreement sets forth the
arbitration clause on which Defendants' motion relies:
Section 7.2 Arbitration. Subject to Section 7.1 of this
Agreement, the only mechanism to settle any dispute,
controversy or claim arising out of or relating to this
Agreement shall be settled [sic] by binding arbitration in
Garland, Texas, before a single arbitrator in accordance with
the Rules of the American Arbitration Association, and
judgment upon the award rendered by the arbitrator may be
entered in the federal courts located in Texas.
(ECF No. 23-2 at 7.) Article VII, Section 7.11 provides that
it “is binding on [Michael Quest] and [IDQ] and their
successors and assigns.” (Id. at 9.)
Defendants' Brand and Products
2014, William and Michael Quest allegedly co-founded the
“Avalanche” division of Defendant TSI Products,
Inc., which also produces automotive refrigerant products.
(ECF No. 9 ¶ 38.) Plaintiff alleges that in January
2015, TSI launched the family of “Avalanche”
refrigerant products featuring a blue and white trade dress
with a label design and snow-covered mountain design mark
similar to those used by Plaintiff. (Id. ¶ 43.)
Plaintiff alleges that TSI employed former employees of
Plaintiff who “may . . . have had access to information
and designs related to Plaintiff's 2014 ARCTIC FREEZE
redesign project during their employment by Plaintiff.”
(Id. ¶ 44.) Since 2015, Avalanche products have
competed directly with Plaintiff's BIG CHILL and ARCTIC
FREEZE products. (Id. ¶ 43.)
launched a new line of premium refrigerant products, the
Avalanche Black Diamond products, in April 2016. These
products allegedly compete directly with Plaintiff's A/C
PRO line of premium products. (Id. ¶ 47.)
Plaintiff alleges that one of these products uses a
“counterfeit imitation of Plaintiff's HIGH MILEAGE
Marks, ” and replaced the blue and white color scheme
used on Defendant's mid-tier refrigerant products with a
dark grey or black label resembling Plaintiff's A/C Pro
and High Mileage trade dress. (Id. ¶¶
47-48.) Plaintiff alleges that these products feature a
stylized snow-covered mountain logo resembling
Plaintiff's ARCTIC FREEZE mountain mark and compete
directly with Plaintiff's ARCTIC FREEZE products.
(Id. ¶ 48.) The products also feature the words
“HIGH MILEAGE” in upward-sloping diagonal
lettering and the word “MILEAGE” in an
“odometer format.” (Id. ¶ 50.)
Plaintiff alleges that TSI copied its trade dress and
trademarks and used them on Avalanche products with the
intent to trade on Plaintiff's recognition in the market
and goodwill. (Id. ¶ 45.)